Vincent P. Annunziata

Patent Trials and Appeals Board

Jan 24, 2020

12070138 - (D) (P.T.A.B. Jan. 24, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/070,138 02/15/2008 Vincent P. Annunziata TCO-10-1367CIP 8720
35811 7590 01/24/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/24/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VINCENT P. ANNUNZIATA
____________

Appeal 2018-006617
Application 12/070,138
Technology Center 3600
____________

Before MICHAEL W. KIM, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 13–18, 37–39, 41, and 42. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed December 18, 2017) and Reply Brief (“Reply Br.,” filed June 14,
2018), and the Examiner’s Answer (“Ans.,” mailed May 3, 2018) and Final
Office Action (“Final Act.,” mailed July 28, 2017). Appellant identifies
“TRADECAPTURE OTC CORP” as the real party in interest. Appeal Br. 1.
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CLAIMED INVENTION
Appellant describes that the claimed invention “relates to a system for
trading commodities and the like over the Internet” (Spec. ¶ 2).
Claims 13 and 37 are the independent claims on appeal. Claim 13,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
13. A system for efficient data storage and retrieval
comprising:
[(a)] one or more computers;
[(b)] a user device comprising a display;
[(c)] a communications link between the one or more
computers and the user device;
[(d)] at least two computerized exchanges, each
transacting at least one commodity among a plurality of
commodities, executing on the one or more computers and
accessible by users having proper exchange permissions for each
of the at least two computerized exchanges;
[(e)] an indication database, accessible by the one or
more computers, storing a plurality of indications, the plurality
of indications corresponding to each of the at least two
computerized exchanges, the plurality of indications organized
in the indication database according to a commodity among the
plurality of commodities to which each respective indication
relates;
[(f)] a user database, accessible by the one or more
computers, storing a plurality of user files such that at least one
user file is associated with a specified user among the users of
the system and further containing two or more exchange
permissions indicating two or more specific exchanges among
the at least two computerized exchanges and one or more specific
commodities associated with each of the two or more specific
exchanges to which the specified user may access; and
[(g)] software executing on at least one computer of the
one or more computers that causes the at least one computer to:
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[(g1)] pool, for the specified user, indications
among the plurality of indications submitted to the at least
two computerized exchanges by:
querying the user database for the at least one
user file associated with the specified user to
retrieve the two or more exchange permissions from
the at least one user file,
identifying the one or more specific
commodities within each of the two or more
specific exchanges that the specified user is
permitted to access based on the retrieved two or
more exchange permissions, and
retrieving, from each of the two or more
specific exchanges, one or more indications from
among the plurality of indications in the indication
database by searching the respective identified
commodities among the one or more commodities
in the indication database,
[(g2)] aggregate each retrieved indication from each
of the two or more specific exchanges to form aggregated
indications,
[(g3)] generate a presentation of the the [sic]
aggregated indications retrieved from each of the two or
more specific exchanges,
[(g4)] transmit the presentation to the user device
over the communications link,
[(g5)] display, via the display on the user device, the
presentation of the aggregated indications, and
[(g6)] automatically and continuously refresh and
update the presentation displayed on the user device to
reflect changes to the plurality of indications in real-time.
REJECTION
Claims 13–18, 37–39, 41, and 42 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
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ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 6–23).
We select independent claim 13 as representative. The remaining claims
stand or fall with claim 13. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
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In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “pool[ing] data from search results
and display[ing] the collected and aggregated data to the user for trading
commodities,” i.e., to an abstract idea similar to other concepts that the
courts have held abstract (Final Act. 4). The Examiner also determined that
the claims do not include additional elements that are sufficient to amount to
significantly more than the abstract idea itself because the claims only
require the use of generic computer components that perform generic
computer functions (id. at 4–5).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2 3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the 2019
Revised Guidance in response to comments solicited from the public.
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judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner mischaracterized the concept to which claim 13 is directed
or that the Examiner otherwise failed to consider the claim as a whole
(Appeal Br. 18–21). The Examiner’s characterization of claim 13 is, in our
view, fully consistent with the Specification, including the claim language.
That the claim includes more words than the phrase the Examiner used to
articulate the abstract idea, and that the Examiner, thus, articulates the
abstract idea at a higher level of abstraction than would Appellant is an
insufficient basis to persuasively argue that the claim language has been
mischaracterized. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41
(Fed. Cir. 2016) (“An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
We also are not persuaded that the Examiner erred in determining that
claim 13 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
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822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification (including the claim language) that the focus of claim 13 is on
an abstract idea, and not on any improvement to technology or a technical
field.
The Specification is entitled “SYSTEM FOR TRADING
COMMODITIES AND THE LIKE,” and describes in the Background
section that, as the commodities industry has evolved, “[t]here has been an
increasing desire in the various commodities markets to move toward
Internet-based systems” to take advantage of the “vast capabilities” of the
Internet “in order to attract new clientele and to expedite and process
transactions between parties” (Spec. ¶ 5). The Specification explains that
“[c]urrently, OTC [over-the-counter] physicals and derivatives are traded
dominantly via a phone based system” and that although regulated futures
contracts have been trading via a “pit” and electronic “non-internet” basis,
“the actual trading of the OTC physical and derivative commodities is
generally left to brokers and traders using relatively traditional means of
telephone, fax, and telex” (id.). The Specification describes that various
industry entities, e.g., commodity traders and commodity brokers, have
formed groups to study the use of the Internet as a tool to “pool order
liquidity” and “streamline transactions and workflow”; however, according
to the Specification, the formation of these groups presents a “major
problem” inasmuch as “liquidity is . . . divided up or spread out amongst the
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groups” (id.). The Specification, thus, describes that what is desired is a
system for trading commodities in an Internet environment that enables
various exchanges to create and share commodities within a unified database
and that further permits member traders and brokers to post and view bids
and offers and negotiate and consummate transactions on commodities from
one or more exchanges in an integrated presentation that pools order
liquidity from the various exchanges (id. ¶ 7).
The claimed invention is ostensibly intended to satisfy this desire by
providing a system and method for trading commodities in which open bids
and offers for commodities currently available for trading, i.e., indications,
on at least two exchanges to which a particular user has access, are retrieved
from a unified database and transmitted to the user for display on a user
device (see, e.g., id. ¶ 55). Claim 13, thus, recites a system comprising, inter
alia, one or more computers configured to: (1) retrieve, for a specified user,
exchange permissions associated with the user and indications for one or
more specific commodities within the exchanges that the user has
permission to access, i.e.,
pool, for the specified user, indications among the
plurality of indications submitted to the at least two
computerized exchanges by:
querying the user database for the at least one user
file associated with the specified user to retrieve the two
or more exchange permissions from the at least one user
file,
identifying the one or more specific commodities
within each of the two or more specific exchanges that the
specified user is permitted to access based on the retrieved
two or more exchange permissions, and
retrieving, from each of the two or more specific
exchanges, one or more indications from among the
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plurality of indications in the indication database by
searching the respective identified commodities among
the one or more commodities in the indication database,
[and]
aggregate each retrieved indication from each of the two
or more specific exchanges to form aggregated indications
(steps (g1) and (g2)); (2) “generate a presentation of the the [sic] aggregated
indications retrieved from each of the two or more specific exchanges”
(step (g3)); (3) “transmit the presentation to [a] user device over [a]
communications link” (step (g4)); and (4) display the presentation on the
user device, automatically and continuously updating the presentation to
reflect changes to the subject indications, i.e., “display, via the display on the
user device, the presentation of the aggregated indications” and
“automatically and continuously refresh and update the presentation
displayed on the user device to reflect changes to the plurality of indications
in real-time” (steps (g5) and (g6)). These limitations, when given their
broadest reasonable interpretation, recite (1) collecting information, i.e.,
open bids and offers for commodities available for trading, for a specified
user; (2) formatting the information for presentation to the user;
(3) transmitting the presentation to a user device; and (4) displaying the
presentation on the user device.
Claim 13 recites that these steps are performed using one or more
computers. Yet, the underlying processes recited in the claim are all acts
that could be performed by a human, e.g., mentally or manually, using pen
and paper, without the use of a computer or any other machine. Indeed, with
the exception of the recited computer components, we find nothing in
claim 13 that precludes these steps from being performed by a human.
Cf. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
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(Fed. Cir. 2016) (where the claims were directed to a post office for
receiving and redistributing email messages on a computer network, the
court observed that “with the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose[s] them from
being performed by a human, mentally or with pen and paper”).
A person, for example, could read exchange permissions for a
particular user, and indications, i.e., open bids and offers, for that user, from
an existing database (cf. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a limitation reciting
obtaining information about transactions that have used an Internet address
identified with a credit card transaction can be performed by a human who
simply reads records of Internet credit card transactions from a pre-existing
database)), and could format that information for presentation to the user
either mentally or using pen and paper. Such a person also could present the
collected information to the user via oral or written communication and
similarly update the information via oral or written communication. Cf.
Clarilogic, Inc. v. FormFree Holdings Corp., 681 F. App’x 950 (Fed. Cir.
2018) (holding ineligible a claimed method for providing certified financial
data indicating financial risk about an individual where a computer
generated a report from the financial account data including real-time and
historical transaction and balance data as directed to the abstract idea of
collecting information, analyzing it, and displaying certain results of the
collection and analysis).
Simply put, claim 13 recites a mental process, i.e., a concept
performed in the human mind, including an evaluation or judgment, and
therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
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See also Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (explaining that “selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”); Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
Having concluded that claim 13 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The Examiner determined, and we agree, that the only elements
recited in claim 13, beyond the abstract idea, are the clamed “one or more
computers”; “user device”; “communications link”; “computerized
exchanges” and indication and user databases — elements that, as the
Examiner observes (Final Act. 5), are described in the Specification at a high
level of generality, i.e., as generic computer components (see, e.g., Spec.
¶ 52). We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in claim 13 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
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(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in computer functionality to the
claimed invention or that otherwise indicates that the claimed invention
integrates the abstract idea into a “practical application,” as that phrase is
used in the 2019 Revised Guidance.4
Appellant argues that the claims are patent eligible because, similar to
the claims in Enfish, the present claims are directed to “a specific
improvement to the way computers operate, embodied in a system that
provides for efficient (and improved) data storage and retrieval” (Appeal
Br. 8). Yet, we find no parallel here between claim 13 and the claims in
Enfish nor any comparable aspect in claim 13 that represents an
improvement to computer functionality.
The Federal Circuit, in Enfish, rejected a § 101 challenge at the
step one stage of the Mayo/Alice analysis because the claims at issue focused
on “a specific type of data structure [i.e., a self-referential table for a
computer database] designed to improve the way a computer stores and

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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retrieves data in memory.” Enfish, 822 F.3d at 1339. Based on the “plain
focus of the claims,” the court, thus, held that the claims were directed to “a
specific improvement to the way computers operate, embodied in the self-
referential table,” and, as such, were more than a mere abstract idea. Id.
at 1336.
Appellant argues here that, by organizing and storing the indications
in the claimed indication database in an indexed manner according to
commodity, and by using indexed user files, each associated with a specified
user in the user database, the claimed invention allows faster and more
efficient data retrieval, which results in higher throughout of data and
information, as compared to prior art systems, and also provides an added
level of security because the system only retrieves indications of the
particular exchange(s) to which each user has been granted access (Appeal
Br. 8–10; see also id. at 17–18). Appellant asserts that this is the type of
“computer-technology improvement that constitutes a patentable innovation
under § 101,” according to Enfish (id. at 9; see also id. at 18 (characterizing
the increase in speed at which the aggregated presentation can be created as
an improvement to the functioning of the computer itself)). But, we are not
persuaded that the claimed invention represents an improvement in computer
functionality, as contemplated by the Federal Circuit in Enfish.
The claimed self-referential table in Enfish was a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory. Enfish, 822 F.3d at 1339. Indeed, the Federal Circuit
emphasized that the claims were not directed to any form of storing tabular
data, but were instead directed to a self-referential table for a computer
database. Id. at 1337. The court, thus, explained that the table stored
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information related to each column in rows of the table, such that new
columns could be added by simply creating new rows. Id. at 1338.
Appellant ostensibly maintains here that computer functionality is
improved based on the use of indices for searching and retrieving data from
the claimed indication and user databases. Yet, the present claims are not
focused on how the use of these indices structurally alters the claimed
database in a way that leads to an improvement in computer functionality, as
in Enfish.
Rather than paralleling the claims in Enfish, the present claims, in our
view, are analogous to those held patent ineligible in Intellectual Ventures I
v. Erie Indent. Co., 850 F.3d 1315 (Fed. Cir. 2017). There, where, as here,
“the heart of the claimed invention lies in creating and using an index to
search for and retrieve data,” the court concluded that “the claims . . . are
directed to an abstract concept under Alice.” Id. at 1328; see also id. at 1327
(“Under step one [of the Mayo/Alice framework], we agree with the district
court that the invention is drawn to the abstract idea of ‘creating an index
and using that index to search for and retrieve data.’ . . . . This type of
activity, i.e., organizing and accessing records through the creation of an
index-searchable database, includes longstanding conduct that existed well
before the advent of computers and the Internet.”).
Importantly here too, there is a fundamental difference between
computer functionality improvements, on the one hand, and uses of existing
computers as tools to perform a particular task, on the other — a distinction
that the Federal Circuit, in fact, applied in Enfish, in rejecting the § 101
challenge because the claims at issue focused the self-referential table, i.e., a
specific type of data structure, and not on asserted advances in uses to which
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existing computer capabilities could be put. See Enfish, 822 F.3d at 1335–
36. The alleged improvements in the speed and efficiency of data retrieval
and the added level of security that Appellant touts do not concern an
improvement to computer capabilities but instead relate to alleged
improvements in collecting and displaying information and in controlling
user access to particular information —processes in which a computer is
used as a tool in its ordinary capacity.
We also are not persuaded by Appellant’s argument that the present
claims are analogous to those at issue in DDR Holdings (Appeal Br. 13–15).
The claims at issue in DDR Holdings were directed to retaining website
visitors, and in particular to a system that modified the conventional web
browsing experience by directing a user of a host website, who clicks an
advertisement, to a “store within a store” on the host website, rather than to
the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257–1258.
The court determined that “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
Appellant argues here that rather than applying a known business
practice from the pre-Internet world to computers or the Internet, the present
claims, like those in DDR Holdings, address a problem that is particular to
the Internet world (i.e., the inability to view indications for a specific
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commodity across multiple computerized exchanges without launching
multiple windows to view indications from different computerized
exchanges) by modifying the system to include the claimed at least one
computer and particularly arranged indications and user databases that
enable an end user to view, and initiate transactions with, indications across
multiple computerized exchanges in a single location (id.; see also id. at 17–
18). Yet. unlike the situation in DDR Holdings, there is no indication here
that the claimed computer components are used other than in their normal,
expected, and routine manner for receiving, processing, transmitting, and
displaying information. And “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256.
The court also expressly cautioned in DDR Holdings that “not all
claims purporting to address Internet-centric challenges are eligible for
patent.” Id. at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014), although the patentee argued that its claims were “directed
to a specific method of advertising and content distribution that was
previously unknown and never employed on the Internet before,” 772 F.3d
at 714, the court found that this alone could not render its claims patent
eligible where the claims merely recited the abstract idea of “offering media
content in exchange for viewing an advertisement,” along with “routine
additional steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet.” Id. at 715–716.
Similarly here, we find that the invocation of the Internet is not
sufficient to transform Appellant’s otherwise patent-ineligible abstract idea
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into patent-eligible subject matter. We find, as did the Examiner, that the
claims pool data and display the aggregated data to a user. Narrowing that
to online trading of commodities merely limits the use of the pooling and
displaying to a particular technological environment, which the Court made
clear in Alice is insufficient to transform an otherwise patent-ineligible
concept into patent-eligible subject matter. See Alice Corp., 573 U.S. at 222.
Appellant’s reliance on Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1302 (Fed. Cir. 2016) is similarly misplaced (Appeal Br. 15).
There, the Federal Circuit held the claim was patent eligible because the
claim entails an unconventional technological solution (enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases). Although the solution requires
generic components, the court determined that “the claim’s enhancing
limitation necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality” and that the “enhancing limitation depends not only upon the
invention’s distributed architecture, but also depends upon the network
devices and gatherers –– even though these may be generic –– working
together in a distributed manner.” Amdocs, 841 F.3d at 1300–01.
Appellant argues that, similar to the claims in Amdocs, the present
claims provide “a technological solution (at least one computer component,
an indication database and a user database and their cooperative
functionality)” to “technological problems (i.e., inefficient data
storage/retrieval, data security, limited access to data from one exchange at a
time, limited data throughput, data inaccuracy, data usability, etc.)” (Appeal
Br. 15). But, Appellant does not identify any “distributed architecture”
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comparable to that in Amdocs or otherwise establish that the generic
components recited in the claims operate in an unconventional manner.
Appellant’s attempt to draw an analogy between the present claims
and the patent-eligible claim in McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) also fails (Appeal Br. 16). In
McRO, the Federal Circuit concluded that the claim, when considered as a
whole, is directed to a “technological improvement over the existing, manual
3-D animation techniques” and uses “limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” McRO, 837 F.3d at 1316. Specifically, the Federal
Circuit found that the claimed rules allow “computers to produce ‘accurate
and realistic lip synchronization and facial expressions in animated
characters’ that previously could only be produced by human animators”;
and that the rules are “limiting in that they define morph weight sets as a
function of the timing of phoneme sub-sequences.” Id. at 1313 (citations
omitted).
Unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to collect and
display information. It does not improve a display mechanism as was the
case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (distinguishing McRO).
Finally, we are not persuaded of Examiner error to the extent
Appellant maintains that the claims are patent eligible because the claims do
not preempt “all permissioning, data storage and retrieval
systems/techniques” (Appeal Br. 16). Although the Supreme Court has
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described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 13 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic computer components used as tools to
perform the recited abstract idea. As such, they do not integrate the recited
abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–
24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 13 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 13 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 13 includes additional elements or a combination of elements
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that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant attempts to draw an analogy between the present claims and
those in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 11–13). Yet, we can find no
parallel between claim 13 and the claims at issue in BASCOM.
There, the Federal Circuit determined that the claims were directed to
a technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by taking a known filtering
solution — i.e., a “one-size-fits-all” filter at an Internet Service Provider
(“ISP”) — and making it more dynamic and efficient by providing
individualized filtering at the ISP. BASCOM, 827 F.3d at 1351. The court,
thus, held that the second step of the Mayo/Alice framework was satisfied
because the claimed invention “represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id.
Appellant argues that, similar to the inventive concept embodied in
the claims of BASCOM, the ordered combination of claim elements here
recites a particular implementation that improves the efficiency of the
electronic exchanges and the overall system by offloading “redundant
exchange permissioning and querying functions” from the electronic
exchanges of the system (i.e., so that the exchanges do not have to perform
these functions), and centralizing the functions in at least one computer
component that is separate from the electronic exchanges (Appeal Br. 11–
12). But, unlike the filtering system improvements in BASCOM that added
significantly more to the abstract idea in that case, the claimed invention
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here merely uses generic computing components to implement an abstract
idea in the form of a mental process, or using pen and paper, i.e., pooling
open bids and offers for commodities currently available for trading
(indications) on at least two exchanges to which a particular user has access
and displaying the aggregated data to the user.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 13 includes additional elements or a
combination of elements that is not well-understood, routine and
conventional, because the claim is allegedly novel and/or non-obvious in
view of the prior art (id. at 12). Neither a finding of novelty nor a non-
obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent eligible. Although the second step in the
Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18
(citation omitted). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
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The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the clamed “one or more computers”;
“user device”; “communications link”; “computerized exchanges” and
indication and user databases, i.e., generic computer components used to
perform generic computer functions (Final Act. 5) — a determination amply
supported by, and fully consistent with the Specification (see, e.g., Spec.
¶ 52).5 Appellant cannot reasonably contend, nor does Appellant, that there
is a genuine issue of material fact regarding whether the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 13 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions, e.g.,
receiving, processing, transmitting, and displaying information. Indeed, the
Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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with no alteration of computer functionality.” Berkheimer v. HP, Inc.,
890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal
citations omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-
abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 13 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 13, and claims 14–18, 37–39, 41,
and 42, which fall with claim 13.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–18, 37–
39, 41, 42
101 Eligibility 13–18, 37–
39, 41, 42

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED